Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Tuesday, 31 March 2009

The copyright term extension debate is getting even murkier. The BBC reports:

The Featured Artists Coalition, a new pressure group with members including a number of prominent musicians has said that the current 95 year proposal will be bad for performers and fans. They back a term extension, but call for the copyright to revert to the artist after 50 years

The UK voted against the European Commission's 95 year proposal on Friday in Brussels. The UK wants to see the extension limited to 70 years.

The IPKat is curious about this. He notes that many of the voices in the debate are prominent musicians who aren't the people who the extension is meant to protect. Sir Cliff isn't holding out the begging bowl, nor are the members of Radiohead. What is the view of the session musicians who are said by the Commission to be in need of the extension, the IPKat wonders?

Readers of this weblog might just have missed the European Parliament recommendation of 26 March 2009 to the Council on strengthening security and fundamental freedoms on the Internet (2008/2160(INI)). The IPKat's friend, dynamic ace reporter Tara Train has however been busily summarising it for the benefit of his many readers.

Right: needing a break from cat imagery and punning captions, the IPKat decided to give himself a treat for a change

Tara's report runs as follows:

"Many will be aware of the content industry’s push for legislation requiring ISPs to play a role in the protection of copyright works online. ISPs, they claim, have a responsibility to rights-holders since copyright infringement is facilitated over their networks. Anti-piracy lobbyists have been hard at work trying to convince governments to introduce laws compelling ISPs to implement the graduated response system, better known as the ‘three strikes’ rule. Under this system, ISPs will be required to monitor and log the internet activity of their customers, sending written warnings to those who infringe and, in the case of persistent infringers (those who have already received two warnings) cutting off their internet access for one month to one year.

These proposed actions seem to flout European Directives 2000/31 (the E-commerce Directive) and 2002/58 (the Directive on privacy and electronic communications); the former provides that ISPs may not be put under a general obligation to monitor information which passes through their servers (see (47)), and the latter protects European citizens’ privacy over electronic communications. According to a recent report by the European Parliament -- overwhelmingly adopted by MEPs with 481 votes in favour, 25 against and 21 abstentions -- the ‘three strikes’ rule now seems to be in breach of human rights as well.

The Security and Fundamental Freedoms on the Internet Report emphasises the importance of the internet for promoting democratic initiatives and political debate, ensuring freedom of expression and dissemination of knowledge, as well as developing international communication and cultural understanding. Importantly, the report claims that ‘e-illiteracy will be the new illiteracy of the 21st Century; ensuring that all citizens have access to the Internet is therefore equivalent to ensuring that all citizens have access to schooling, and such access should not be punitively denied by governments or private companies’.

The Report acknowledges that cybercrime (including piracy) is rife and surveillance technologies exist which could eliminate a great deal of it, but states that ‘the overriding interest of protecting citizens’ fundamental rights should determine the limits and precise circumstances under which such technologies may be used by public authorities or companies’, and ‘the combating of crime must be proportionate to the nature of the crime’.

When the EU Parliament synonymises internet use with freedom of expression, education, and democratic participation, it seems highly unlikely that cutting off an individual’s internet (and consequently limiting their ability to enjoy these fundamental rights) will be considered a proportionate response to a few instances of copyright infringement.

It is recommended that the Council

‘proceed to the adoption of the directive on criminal measures aimed at the enforcement of intellectual property rights, following an assessment, in the light of contemporary innovation research, of the extent to which it is necessary and proportionate, and while simultaneously prohibiting, in pursuit of that purpose, the systematic monitoring and surveillance of all users’ activities on the Internet, and ensuring that the penalties are proportionate to the infringements committed; within this context, also respect the freedom of expression and association of individual users and combat the incentives for cyber-violations of intellectual property rights, including certain excessive access restrictions placed by intellectual property holders themselves’.

Sarkozy and the content industry, one presumes, will not be pleased".

The IPKat loves that bit about "an assessment, in the light of contemporary innovation research, of the extent to which it is necessary and proportionate, and while simultaneously prohibiting, in pursuit of that purpose, the systematic monitoring and surveillance of all users’ activities on the Internet, and ensuring that the penalties are proportionate to the infringements committed". This means "go away and find a perfect solution to the existing problem which has no political, economic or cultural side effects and leaves everyone totally happy" -- a tall order indeed. The ever-cynical Merpel muses, I wonder if we'll end up with the 'three strikes' rule anyway: it may currently have every legal defect imaginable but at least people understand it, and it's perfectly legal if you pass a law to say that it's a legitimate exception to the basic principles with which it is currently in conflict. And if we worried about principle, would we really be extending copyright in sound recordings to 95 years ...?

Monday, 30 March 2009

Essex Trading Standards v Wallati Singh[2009] EWHC 520 (Admin) is a Divisional Court (England and Wales) decision from 3 March which the IPKat nearly missed completely. This was an appeal by the local authority trading standards enforcement agency against an acquittal on charges under s.92 of the Trade Marks Act 1994. Lord Justice Goldring summed up the basics of the charge:

"... the respondent, who was a man of good character, appeared before the Essex Justices in Basildon. He was charged as follows. The first allegation was that on 1 September 2007, at Pitsea Market, Basildon, in the County of Essex, he did, with a view to gain for himself or another, without the consent of the proprietor, have in his custody or control in the course of a business certain goods, namely 392 pairs of trainers bearing the Nike sign or logo, such sign or logo being likely to be mistaken for the registered trade mark of Nike International Limited of Oregon, USA, contrary to section 92(1)(c) of the Trade Marks Act 1994. The second allegation was in similar terms. It related to 15 pairs of trainers bearing the BAPE sign or logo".

The Magistrates acquitted the accused. A man with a blameless past, he said he was looking after the market stall belonging to a Mr Hooper, whom he had known for some 20 years. He was unemployed and his wife was suffering from depression. He said he had asked if the goods were genuine and was told that they were, their cheap price being a consequence of their being 'clearance stock'. As a man whose expertise lay in the field of selling ladies' fashion shoes, he was not a sports shoe expert and he would not be able to determine for himself whether the goods in question were genuine.

The Divisional Court was not so merciful. As Lord Justice Goldring said:

"12. The respondent knew that the goods had to be genuine. As the authorities establish, he must be treated as having been aware of the existence of the registered trade mark. Section 92(5) places a legal persuasive burden on the respondent...

13. The issue is whether the respondent discharged the burden upon him under section 92(5). Did he show that he believed on objectively reasonable grounds that these were genuine goods? Or, to put it in the way that this court has to consider it, were the magistrates entitled to conclude, on the evidence they heard, that he did show, on reasonable grounds, that he believed they were genuine?

14. In my view, the evidence advanced by the respondent falls far short of that needed to displace the burden. The goods were taken in a van which was not Mr Hooper's. The respondent knew their price was low. The sole basis for his professed belief was the word of a drug addict, who was apparently suffering from an overdose and unwell nearby. The respondent neither saw nor sought independent evidence, such as documentation, relating to the goods' supply or their provenance. Indeed, he could hardly have done less. In my view, no Magistrates' Court could reasonably have concluded that his belief that the goods were not counterfeit was arrived at on reasonable grounds.

15. ... It is not enough to conclude that the defendant acted honestly. He has, too, to act reasonably, in other words on reasonable grounds. This, the respondent did not do, as on the evidence the magistrates were bound to conclude.

16. [The Magistrates] were entitled to have regard to the respondent's good character in deciding whether or not he was acting honestly. His character, however, was irrelevant in deciding whether the grounds upon which he relied were reasonable. As to the third question, I have already answered that: no reasonable bench could have decided as did this bench.

17. In the circumstances, for the reasons I have given, I would allow this appeal".

The IPKat is closing his eyes and trying very hard to imagine market traders showing each other their documentation in a gentlemanly attempt to persuade each other of the provenance of their merchandise. Merpel says, this is really interesting. We all know that most people who file-share are infringers, so the British government takes the view that we should let the law accord with reality by making file-sharing either legal or at least less illegal. But here, where we all know that lots of cheap fakes are sold in markets, we don't expect the law to bow to reality and make the Walliti Singhs feel better about what they're doing. Is there a double standard, or at least some inconsistency, here?

A press statement hot off the Microsoft websitestates that Microsoft and vehicle navigation business TomTom have just settled the highly publicised patent litigation commenced by (i) Microsoft before the US District Court for the Western District of Washington and the International Trade Commission (ITC) and (ii) by TomTom in the US District Court for the Eastern District of Virginia. According to the press statement

"The cases have been settled through a patent agreement under which TomTom will pay Microsoft for coverage under the eight car navigation and file management systems patents in the Microsoft case. Also as part of the agreement, Microsoft receives coverage under the four patents included in the TomTom countersuit. The agreement, which has a five-year term, does not require any payment by Microsoft to TomTom. It covers both past and future US sales of the relevant products. The specific financial terms of the agreement were not disclosed.

The agreement includes patent coverage for Microsoft’s three file management systems patents provided in a manner that is fully compliant with TomTom’s obligations under the General Public License Version 2 (GPLv2). TomTom will remove from its products the functionality related to two file management system patents (the “FAT LFN patents”), which enables efficient naming, organizing, storing and accessing of file data. TomTom will remove this functionality within two years, and the agreement provides for coverage directly to TomTom’s end customers under these patents during that time.

“We are pleased TomTom has chosen to resolve the litigation amicably by entering into a patent agreement. Our car navigation patents, which are at the heart of the enhanced auto experience enjoyed by millions of drivers today, have been licensed to many companies, including leaders in the car navigation sector. The file management system patents, which increase file management system efficiency and functionality, have also been licensed by many companies, including those that produce mixed source products.

We were able to work with TomTom to develop a patent agreement that addresses their needs and ours in a pragmatic way. When addressing IP infringement issues, there are two possible paths: securing patent coverage or not using the technology at issue. Through this agreement, TomTom is choosing a combination of both paths to meet the unique needs of its business, and we are glad to help them do so.”

“This agreement puts an end to the litigation between our two companies. It is drafted in a way that ensures TomTom’s full compliance with its obligations under the GPLv2, and thus reaffirms our commitment to the open source community.”"

The IPKat--who was once instructed by a malicious SatNav to drive a friend's new car into the Pacific Ocean as a short cut to the San Diego Country Club--is relieved that this dispute has been so swiftly resolved. Merpel is sad, however: this untimely outbreak of peace has deprived her of the chance to make some sharp witticisms about the parties seeking directions from the court ...

While playing around on the patents.com site, the IPKat's eye was caught by one of those Google Ads on the right hand side of his screen. It was headed

UK Patent Office

Avoid Patent Office Mistakes See If Your Idea Qualifies - Secure

"UK Patent Office" -- it's not so often one hears those words these days. Anyway, both "UK Patent Office" and the advertisement itself are hyperlinked to this site, calling itself Design Mind Group. The link leads to an on-screen form, illustrated with the liberating "Fun on the Beach" (right), which invites inventors to "take action now and submit your idea today". While the legend at the bottom of the page reassuringly reads

"Confidentiality Notice: All information acquired via this website is deemed strictly confidential and may not be sold, leased, bartered, or conveyed in any other manner without the expressed written permission of the owner of said invention",

there is no named human being whom one can contact if anything goes wrong. The Design Mind Group appears to be based in Wilmington, Delaware, which might be an inconvenient place for non-Delaware innovators to litigate. Not that anything could go wrong: the Design Mind Group's resources, comfortingly, appear to be the World Intellectual Property Organization, the USPTO, the European Patent Office and various other venerable bodies.

Elsewhere on the internet the question has been raised as to whether there is a scam.

The IPKat would be curious to hear from anyone who knows anything of this operation. Merpel says, aren't you glad this weblog doesn't carry Google Ads?

Saturday, 28 March 2009

The IPKat has been a bit remiss in announcing the publication of Oxford University Press's flagship IP journal, the Journal of Intellectual Property Law and Practice (JIPLP), which IPKat team member Jeremy edits. Indeed, two issues have gone out since last he performed this task and a third, with "April" on its cover, is on the way. Topics featured in the February issue included the following:

* a review of the legality of 'data-scraping' in the UK by DMH Stallard solicitors Frank Jennings and John Yates;

Right: one problem with nanotechnology patents is that the prior art can be too small to find ...

* Matthew Murphy (MMLC Group, Beijing) considers how best joint-venture partners can protect their share of the IP in China.

You can read the February editorial in full, and at no cost, here, and the March editorial (a guest piece by Neil J. Wilkof) hereRead all the editorials of the past twelve months hereFor free sample, click here; to subscribe, click here; to write, click here

Friday, 27 March 2009

Tucked away in Science Business is the news that the news that the European Commission has adopted a Recommendation to the Council that would provide the Commission with negotiating directives for the conclusion of an agreement creating a Unified Patent Litigation System (UPLS) - press release and document here. The envisages system would have 'a largely decentralised first instance, a single appeal instance and a role of the ECJ aimed at providing a consistent interpretation and application of Community law.' In particular, the ECJ would answer preliminary references from elsewhere in the UPLS structure.The next step is for the ECJ to give its opinion on the arrangement, while work continues on the Community patent, and the relationship between the EPO and the EU.

This may not be everything that proponents of the Community patent would like, says the IPKat, but it looks like a good start.

PLEASE don't forget to check out the IPKat's Forthcoming events side bar. At the time of posting this medley, the number of events on offer stands at a moderate 36. As usual, FREE events are coded in BLUE.

Some small landmarks in the IP blogososphere. The highly recondite SPC Blog has continued its improbable long march to popularity for patent extension folk and now has an email circulation of 350.

Right: The SPC Blog is for intellectuals only ...

Meanwhile PatLit, the weblog for enthusiasts of patent litigation, has just edged past the 250 email subscriber mark. Incidentally there are still two days left to vote on PatLit's poll on the thorny question: "Given the current state of play in the pharmaceutical sector, where would you invest your pension fund?", the choices being (i) the proprietary pharma sector, (ii) the pharma generics sector or (iii) lottery tickets.

A young man currently living in Hungary has written to ask if any of the IPKat's readers in the United Kingdom have any work for him in the field of patent/trade mark/design administration. He has worked for the Hungarian Patent Office for six years as a formal examiner, his scope of responsibilities including the formal examination of PCT applications entering the national phase in Hungary (designated office work), plus receiving office work relating to European patent, Community trade mark and Community design applications. He was also in charge of processing Sequence Listings submitted in an electronic format, using an in-house developed IT programme. While at the Patent Office he completed a two-year training course, receiving a state-accredited Higher-grade Certificate in Intellectual (Industrial) Property Rights Protection. Being a Hungarian national, he needs no labour permit to work in the UK: all he needs is to get registered as an employee in the UK, based on a declaration from his employer, once a signed contract of employment has been received. If you'd like to contact him, email the IPKat here, and the Kat will forward it to him.

The IPKat has a soft spot for the GeekLawyer's Blog. GeekLawyer (left), whose potent combination of outspoken honesty and irredeemably bad taste makes him unquestionably the Jade Goody of the IP blog world, displayed his sensitive side this week with this report and podcast on his friend Bill Patry's SCL talk in memory of the late Sir Hugh Laddie, whose potent combination of pungent wit and guts to deploy it to maximum effect made him ... well, never mind.

This lovely piccie (right) has been sent in by the vigilant Peter Hirtle (Cornell). It is the work of Carolyn E. Wright, a.k.a. Photo Attorney, whose website has some lovely animal shots. Ms Wright is an attorney who works for photographers, as her name suggests, though Merpel was for a while under the impression that she was a photographer who works for attorneys. Tufty adds: since attorneys usually have more money than photographers, it's probably more profitable to be a photographer who works for an attorney than vice versa.

Dennis Peterson, of patents. com, has been excitedly telling the IPKat all about his patent search services, which include searchable indexed patent pages available in 15 native languages [rather fewer than the European Union has to cope with, notes the IPKat, but a pretty useful start -- and there's probably not a lot of patent-related material that's available exclusively in Maltese]. Peter adds: "It’s a source for patent data, analytic tools and provides a hosted community platform enabling users to connect to generate business opportunities, including the licensing/sale of patent". It's also a pretty easily-remembered business name.

Finally, the IPKat just wants to say "hi" to a new book. The tome in question is Patent Law and Theory, edited by Toshiko Takenaka and published this month by Edward Elgar's Research Handbooks in Intellectual Property series. Modesty forbids the IPKat from mentioning that team blogger is the series editor and that he wrote a chapter in it too. Details of this book can be gleaned from it's web page here and you can read about its launch seminar here.

Here's a tricky case. A couple of songwriters assign their copyrights to a company that is obliged to exploit those copyrights commercially. The deal contains a clause that enables the songwriters to get their copyright back if the company is in material breach of its obligations. The company then assigns the copyrights to another company, following which the songwriters want their copyright back. Do they get it? Yes, according to Crosstown Music Company v Rive Droite Music Ltd and others[2009] EWHC 600 (Ch), a decision of Mr Justice Mann (Chancery Division, England and Wales) on Wednesday,

Crosstown took an assignment of 119 copyrights owned by Rive Droite. Some of those copyrights related to songs written by Taylor and Barry, who assigned the copyright in their compositions to Rive Droite so that the latter could exploit the copyright and pay them royalties under an agreement which provided (in clause 18(a)) that, if Rive Droite were to be in material breach of its terms and failed to take all reasonable action to remedy that breach within 45 (in Taylor's case) or 60 (in Barry's case) days of written notification of a 'cure notice', the assigned copyright would revert to the writers.

Taylor and Barry later considered that a reversion-triggering breach had occurred, with the consequence they again owned the copyright in their various compositions. In April 2007 they served cure notices on Rive Droite, giving notice to Crosstown, relying on various alleged breaches -- including failure to cough up all the royalties on Cher's song Believe -- and asserting that they now owned thir copyrights again. Faced with those notices, Crosstown sued Rive Droite for specific performance of the sale agreement. Taylor and Barry counterclaimed for copyright infringement. The action involves determining (among other things) (i) whether the copyrights re-vested in Taylor and Barry; (ii) whether clause 18(a) bound the claimant as assignee of the copyrights and (iii) whether Taylor and Barry had lost any right to reversion of the copyrights through waiver, acquiescence or estoppel.

The main question before Mann J in these proceedings whether Taylor and Barry were correct in saying that there had been breach of clause 18(a). On a close analysis of the facts, he concluded that clause 18 provided for an automatic revesting of the copyrights, the cure notices were unassailable and that, therefore Crosstown's attack on their validity must fail. The judge discussed one legal issue of substantial interest: did clause 18 take effect differently in respect of different national copyrights? On that matter he had this to say:

"89.... I refuse to allow Crosstown to contend that the effect of clause 18 might be different in relation to different national copyrights. Although it might not be strictly relevant, I would add that this conclusion produces a much more satisfactory (if not conveniens) litigation picture, because if the position were otherwise the point might have to be determined in as many jurisdictions as there are copyrights in this case. I have not totted up the number of jurisdictions involved, but I think there are at least half a dozen if not twice that. That prospect is unsatisfactory. In the present case it is not appropriate to inflict that on the Writers. I reach the conclusion that I do without having to consider the strength of the submission that it would be wrong to assume that foreign copyright law is the same as English law. That submission would only become relevant if there were an issue as to different jurisdictions, and I have held that there is no such issue in this case because of the manner in which the case has proceeded hitherto. I also do not have to consider the extent to which foreign copyright issues can be litigated in this country (see, for example, Lucasfilms Inv v Ainsworth [noted here by the IPKat]), because again that only arises where there is a properly formulated issue as to the point, which again in this case there is not".

The IPKat wonders how many businesses taking assignments of copyright take the trouble to root around for clauses that may have the effect of undermining their commercial expectations, or whether they are merely happy to rely on warranties that their title will be secure. Merpel moans, I still don't get it: if Crosstown has taken an assignment of the copyright from Rive Droite, surely Rive Droite doesn't have any copyright title to the works that can revert to the songwriters? Or have I missed something?

Thursday, 26 March 2009

Laurent Teyssedre has beaten the IPKat to it again, in announcing the result of today's EPO Administrative Council vote approving the following new version of Rule 36 EPC:

(1) The applicant may file a divisional application relating to any pending earlier European patent application, provided that:

(a) the divisional application is filed before the expiry of a time limit of twenty-four months from the Examining Division's first communication in respect of the earliest application for which a communication has been issued, or

(b) the divisional application is filed before the expiry of a time limit of twenty-four months from any communication in which the Examining Division has objected that the earlier application does not meet the requirements of Article 82, provided it was raising that specific objection for the first time.

(2) A divisional application shall be filed in the language of the proceedings for the earlier application. If the latter was not in an official language of the European Patent Office, the divisional application may be filed in the language of the earlier application; a translation into the language of the proceedings for the earlier application shall then be filed within two months of the filing of the divisional application. The divisional application shall be filed with the European Patent Office in Munich, The Hague or Berlin.

It looks like the IPKat's earlier suspicions about the proposed amendments have been confirmed, and the EPO will be holding to their promise of preventing 'abusive' divisional applications from being filed in future. The IPKat is, however, not certain about how the new Rule will work in practice. Will applicants be prevented from filing a divisional to cover embodiments no longer covered as a result of a limiting amendment, if 2 years have passed since the first communication under Article 94(3)? Will it be necessary to provoke an objection under Article 82 by submitting multiple independent claims so that a divisional application can be filed? What would happen if an objection under Article 82 were to be deliberately provoked; will this set the clock running again? Will there be a rush of divisional applications filed within 6 months of the rule coming into force? We shall presumably find out all this, and more, in due course...

UPDATE (4 April): It's now official (also here). The changes will come into force on 1 April 2010.

A slight anticlimax in the Zeitungszeugen case concerning the ongoing battle between the Bavarian State government (Bavarian Ministry of Finance) and a British publisher, Peter McGee, concerning the republication of historical Nazi newspapers in a reprint series (see the IPKat's earlier posts here and here).

German magazines Der Spiegeland Focus report that the Regional Court Munich I (Landgericht München I, depicted on the left) yesterday partly rejected the Bavarian state government's attempt to use copyright laws to prevent educational reprints of Nazi newspapers Voelkischer Beobachter and Der Angriff. The court decided that the publisher of the history series Zeitungszeugen (in English: newspaper witnesses) is allowed to reprint early editions of the newspapers which were first published before 1939, i.e. published from 1933 to 1938. The judges ruled that the copyright in these publications has already expired, given that more than 70 years have passed since the newspapers in question were first published. The court took the view that notorious Nazi propaganda minister Goebbels and Adolf Hitler, who were both listed as editors of the newspapers, could not be considered as editors in the legal sense due to a lack of their respective 'creative input'.Logically, the Munich court decided differently for reprints of newspapers which were published during and after 1939. These newspapers were not yet out of copyright and the republication of entire newspapers could not be considered as a legitimate citation. As such, Zeitungszeugen magazine is not allowed to reprint articles or newspapers published from 1939 to 1945 because Bavaria still holds the copyrights for that period.

The ruling has no impact on Kat newspapers (picture taken from the Blue Skunk Blog) The Bavarian State government intends to appeal the decision (see press release here), whereas the British publisher behind the Zeitungszeugen project is cited as being very happy with the Munich court's decision. Tobias Pichlmaier, a spokesperson for the court is cited by Focus magazine as saying the Bavarian state had to think of something other than copyright laws if it intended to prevent such republications.

The court's press release can be found here (in German). Case reference is 21 O 1425/09, Landgericht München I. The decision is not final.

Certainly not the last chapter in this dispute. The IPKat also wonders what the Bavarian State government's plans are for the time after 2015 when the copyright for Adolf Hitler's Mein Kampf will expire 70 years after the death of its author. Mein Kampf currently cannot be bought in Germany. Finally, this Kat seems to recall that the prosecution in Munich had intended to start criminal proceedings against the publisher. Do any of our readers know whether this ever happened...?

The IPKat was pacing up and down this morning, impatiently awaiting the Advocate General's Opinion in Case C-32/08 Fundación Española para la Innovación de la Artesanía (FEIA) v Cul de Sac Espacio Creativo, S.L. and Acierta Product & Position, S.A., a reference for a preliminary ruling from the Juzgado de lo Mercantil Número Uno, Alicante, Spain, lodged on 28 January 2008 and obviously jumping quite briskly through the administrative hoops in Luxembourg. The questions referred in that reference relate to Article 14(3) of the Community Design Regulation 6/2002 which states

"where a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to the Community design shall vest in the employer, unless otherwise agreed or specified under national law".

The Alicante court asked the Court of Justice of the European Communities the following questions:

"Must Article 14(3) ... be interpreted as referring only to Community designs developed in the context of an employment relationship where the designer is bound by a contract governed by employment law whose provisions are such that the designer works under the direction and in the employ of another? or

Must the terms 'employee' and 'employer' in Article 14(3) ... be interpreted broadly so as to include situations other than employment relationships, such as a relationship where, in accordance with a civil/commercial contract (and therefore one which does not provide that an individual habitually works under the direction and in the employ of another), an individual (designer) undertakes to execute a design for another individual for a settled price and, as a result, it is understood that the design belongs to the person who commissioned it, unless the contract stipulates otherwise? [the IPKat feels that Art.14(3) applies only to a contract where the employer and employee have the status of employer and employee, otherwise it would have not needed to use those terms. But nobody asked him ...]

In the event that the answer to the second question is in the negative, on the ground that the production of designs within an employment relationship and the production of designs within a non-employment relationship constitute different factual situations,

(a) is it necessary to apply the general rule in Article 14(1) ["The right to the Community design shall vest in the designer or his successor in title"] ... and, consequently, must the designs be construed as belonging to the designer, unless the parties stipulate otherwise in the contract? or

(b) must the Community design court rely on national law governing designs in accordance with Article 88(2) ["On all matters not covered by this Regulation, a Community design court shall apply its national law, including its private international law" -- but Art. 14(1) does apply so there should be no need to lose sleep over this, surely?] ...?

In the event that national law is to be relied on, is it possible to apply national law where it places on an equal footing (as Spanish law does) designs produced in the context of an employment relationship (the designs belong to the employer, unless it has been agreed otherwise) and designs produced as a result of a commission (the designs belong to the party who commissioned them, unless it has been agreed otherwise)?

In the event that the answer to the fourth question is in the affirmative, would such a solution (the designs belong to the party who commissioned them, unless it has been agreed otherwise) conflict with the negative answer to the second question?"

The Advocate General in this instance is AG Mengozzi, about whom the Kat shall say nothing, in any language. The Opinion has now been posted in ten official languages of the European Union, but not in English. The French version gives the AG's recommendations to the Court as follows:

2. Les articles 14 et 88 du règlement (CE) n°6/2002 ... doivent être interprétés en ce sens que le titulaire du droit aux dessins et modèles créés dans le cadre d’un rapport contractuel autre qu’un rapport de travail subordonné, tels que les dessins et modèles réalisés par un prestataire pour le compte d’un maître de l’ouvrage, doit être déterminé d’après la volonté expresse des parties et la loi applicable au contrat. La législation d’un État membre qui assimile, pour déterminer le titulaire du droit au dessin ou modèle, les dessins et modèles réalisés par un prestataire pour le compte d’un maître de l’ouvrage aux dessins ou modèles créés par le salarié dans le cadre d’un rapport de travail subordonné, n’est pas contraire à l’article 14, paragraphe 3, dudit règlement" [Per Babel Fish, as tweaked by the Kat who is slightly making it up as he goes along: "the holder of the right to the drawings and models created within the framework of a contractual relationship other than in the course of employment duties, such as the drawings and models carried out by a person receiving benefits for the account of a commissioning party, must be determined in accordance with the expressed intention of the parties and the law applicable to the contract. The legislation of a Member State which assimilates, to determine the holder of the right to the drawing or model, the drawings and models carried out by a person receiving benefits under a commission in respect of the drawings or models created by the employee within the framework of an employment relationship, is not contrary in article 14(3) of the Regulation"].

If the Kat has gone seriously astray, please put him right.Teach your cat French here

It may not be Harry Potter, but if you add up all the volumes of Copinger & Skone James on Copyright -- now in its 15th glorious edition -- which must have been lovingly purchased by the copyright fraternity, the aggregated sales must be quite impressive.

Right: Messrs Copinger and Skone James engage in some on-site discussion of som of the finer points of performers' right

Devotees of C & SJ will be delighted to discover, if they have not already done so, that the Third Cumulative Supplement to the 15th edition has now been published. Sleek and black, with lix [not what you might think -- it's just the Latin for 59] and 619 pages, it's absolutely un-put-downable [says Merpel, unless you don't do copyright, in which case it's un-pick-upable]. From the penultimate paragraph of the Foreword, the observant reader will soon spot that the editors, Gillian Davies and Gwilym Harbottle (Hogarth Chambers), are inviting comments from readers as to the current edition and for its successor, the 16th edition which is rolling up for publication in 2010. Say the Two Gs,

"Send us your observations by 31 July 2009, by email to copinger@hogarthchambers.com, and you could be the winner of a wonderful prize -- a free copy if the 16th edition".

Says the IPKat, since the 15th edition currently costs £545 and the publishers are not likely to be selling the 16th at bargain basement prices, this looks like a good prize to win. Says Merpel, it's just dawned on me what the connection is between Harry Potter and Copinger & Skone James -- it's Hogwarts and Hogarth ...

While the Kat is on the subject of copyright, he just wants to say that he recently received an author's offprint of "Conserving Culture and Copyright: a partial history", an article by Professor William Cornish which was recently published in a journal the Kats don't usually get to see -- the Edinburgh Law Review(vol.13, no.1, 2009). You can get hold of it for a moderate price by clicking here. The IPKat just wanted to say how pleased he is that Bill is still productively active and hopes that this scholarly and dignified contributor to the understanding of so many of us continue to do so for many a long year.

Wednesday, 25 March 2009

The Register reports that the New Zealand government has put on hold plans for a 'three strikes and you're out' rule, forcing ISPs to disconnect those accused of illegal downloading three times. This follows a concerted internet campaign against the measure - s.92a of the Copyright Act . However, s.92a is to be rewritten, and John Key, the NZ prime minister has said that he won't allow the internet to become a 'Wild West' for piracy.

The IPKat is happy about this. As more and more activities take place over the internet (in terms of communication, interactions with local and central government and of course business transactions), a complete cutting off of internet access looks particularly punitive.

Pharma patent pool

Reuters reports that GSK has placed 800 drugs into a patent pool to be shared with others trying to find cures for neglected tropical diseases. The move was announced in GSK's corporate responsibility annual report yesterday. Meanwhile the Guardianreports that International Development minister, Ivan Lewis, plans to approach leading pharmaceutical companies to encourage them to join the pool. Mr Lewis said "Challenging pharma to do their bit ... is entirely legitimate."

The IPKat welcome's GSK's move. He's not sure whether it's the job of government to go round drumming up support for the scheme and telling people how to use their private property though.

Via the IPKat's Bloomberg friend Stephanie Bodoni comes news that Anheuser-Busch InBev NV has just lost its bid to secure a Community trade mark right to the name Budweiser for beer across the region's 27 nations in its long-running fight with Budejovicky Budvar (Case T-191/07 Anheuser-Busch v OHIM - Budejovicky Budvar (BUDWEISER), still not available on the Curia website at the time this note was posted). According to information received,

"The European Court of First Instance ... dismissed the case ..., ruling that Anheuser-Busch's existing rights in some EU countries can't be extended to the entire region because Budvar had the right to use the Budweiser trade mark for alcoholic beverages in Germany and Austria.

... Anheuser-Busch InBev, which in November completed a $52 billion acquisition of Anheuser-Busch ..., owns the rights to Bud or Budweiser in 23 of the EU's 27 nations. Its efforts to get the EU-wide rights have failed in some nations due to Budvar's claims.

...

Anheuser-Busch, which first applied for the EU-wide rights for the Budweiser beer name 13 years ago, took its fight to the region's main appeals court after Europe's trade mark agency in 2007 rejected the company's bid. The decision had been based on largely irrelevant documents by Czech rival Budvar to block the EU right, Anheuser-Busch had argued.

None of Budweiser s existing trade mark rights in Europe will be cancelled by today's ruling...".

Without sight of the decision, the IPKat feels it would be unwise to comment. He suspects though that there might just be an appeal, given the value of a BUDWEISER Community trade mark to Anheuser-Busch and the possibility of the European Court of Justice clarifying the position on the evidential value of advertisements and invoices as proof of use.

Is global warming a reality, or an unsubstantiated myth? The IPKat notes that, whatever the scientists may say, the global warming is starting to be felt in that iciest and most remote area of the world, the European Commission. An application has been made to the Commission for amendment of the Protected Designation of Origin specification of LA BELLA DELLA DAUNIA olives, from Italy. Among the amendments sought is this:

"‘Description’ in the summary sheet published in 1999 envisaged an indicative harvest date of 1 October, while the specification published in 2000 distinguished between two harvest dates, setting the starting date for green olives as 1 October and for black olives as 25 October.

With regard to the 2000 specification, it has become necessary to bring forward the harvesting of the black olives to 1 October too, since, as a result of changes in climatic conditions, the olives can already be turning colour or have matured as at that date, with wine-red colouration".

Says the IPKat, it's probably not a bad idea for all holders of PGIs and PDOs to check out whether their specifications are time-sensitive. Merpel says, this might create a little useful work for IP advisers at a time when clients may not be thinking too closely of paying them a visit.

Joyous news from Geneva! The IPKat has just been perusing an exciting Press Release from the World Intellectual Property Organisation (WIPO) entitled "Agreement to Simplify International Patent Classification System". A closer reading caused a slight diminution in the Kat's joy when he realised that the agreement relates to something that is going to be done in the future, not something that has already been agreed. Still, it's welcome news.

Right: WIPO is now using HyperLynx to help link related IPC classes

A quick explanation may be appreciated by newcomers and/or IP enthusiasts whose familiarity with patents may not yet match that of other areas of IP. As the Press Release succinctly states:

"The IPC system divides all fields of technology into hierarchical sets of sections, classes, subclasses and groups. It is an indispensable tool for industrial property offices, in conducting searches to establish the novelty of an invention, or to determine the state of the art in a particular area of technology. The IPC is also used by industry to search competitors’ patents and to find technological information to aid research and development".

The International Patent Classification System (IPC) has been through a few revisions in its time, but it's not what you'd call an easy read. According to the Press Release

" The IPC structure will be simplified by abolishing the distinction between the core and advanced level from January 2010. Offices currently using the core level will be able to use the main groups in this unified structure. An updated IPC version will be published every year on January 1, with the possibility of a second publication in case of large numbers of modifications;

Development of the IPC will be accelerated with the aim of building an integral, unified international patent classification by progressively integrating local classification systems such as the United States Classification, the European Classification (ECLA), and the Japan Patent Office FI/F Term under new working procedures;

New working procedures will enhance the use of the e-Forum, through which experts conduct technical consultations in pursuit of greater efficiency and quality of revision work;

The current structure of IPC revision work and procedures will continue to be reviewed in 2010 after one year’s evaluation".

The Committee of Experts will report on its progress this coming September. The Kat, with whiskers a-quiver, awaits in rapt expectation. Merpel says, this might be a simplification, but it sounds like quite a complex simplification to me.

Tuesday, 24 March 2009

The IPKat commented a few days ago on a recent, as yet unpublished, decision of the EPO Board of Appeal, in which the Board considered that Article 60 EPC provided basis for prohibition of double patenting. This prompted a few comments, including one apparently made by Derk Visser, a name which will be well known at least to all EQE candidates. Derk's comment is worth reproducing, if only for the benefit of those who do not keep track via the IPKat's comment feed. He writes:

"The issue of double patenting was extensively discussed in the preparatory documents of the EPC 1973. Since double patenting was regarded as an issue relating to patents, not to patent applications, and the EPC did not relate to the maintenance of patents, it was left to the contracting states to permit or prohibit simultaneous protection (Travaux Préparatoires 1969, BR/7 e/69, p. 8 point 17). The Inter-Governmental Conference in 1972 endorsed this view, a large majority of the interested circles being in favour of this (BR/168/72). As a consequence, the EPC does intentionally not contain a prohibition on double patenting.

The board of the recent decision T307/03 was probably unaware of the above (see reason 2.3 of the decision). Hence, its attempt and probably any attempt, to base a prohibition of double patenting on the present EPC results a contortion of the law.Use of Art.60 as a basis for prohibiting double patenting in the recent decision T307/03 is legally not sound, because the provision relates to who has the right to a patent, not to the constitution of the right, as already stated in the first comment of this blog. The same applies to Art.58, which relates to who may file.

Art.125 cannot be used to introduce a prohibition on double patenting in the EPC, because the text of the provision makes abundantly clear that it relates to procedural matters only, not to substantive issues such as double patenting (see also T587/98 r.3.6). The statement on double patenting in relation with Art.125 in the Munich Conference, cited by Erik in the above contribution, shows that the UK delegation could benefit from some training in the EPC.

Art.139(3) is not intended as a general prohibition on double patenting. Its purpose is to avoid that for a single invention both a European and a national patent is granted. It was intended as a first step towards abolition of national patents (Travaux Préparatoires 1962, 3076/IV/62-D, p. 114a).

The sections C-IV,7.4 and C-IV,9.1.6 of the Guidelines are no basis for refusing an application on the ground of double patenting (T587/98 r.3.5 and 3.6).The statement in decision G1/05 r.13.4 regarding a refusal on the ground of double protection as being non-objectionable, appears to be an oversight on the part of the EBoA.

The legislator clearly missed the opportunity of the EPC2000 to introduce the prohibition in the law. In spite of the clear statements of the legislator that double protection should be dealt with at a national level, most national laws do not have a provision to this end. It is surprising that such a broadly supported principle has not been codified at both international and national level. Hence, we will probably have to put up with case law stretching provisions far beyond the intention of the legislator."

The IPKat thanks Derk for his contribution, and wonders what led this particular Board to arrive at their apparently unsound line of reasoning, particularly when they had nearly 2 years to consider it. Is there more to it than meets the eye, or is this simply another 'rogue' decision that will be quietly swept under the carpet (or, perhaps, overturned by the Enlarged Board) in due course?

Published this morning in the online version of the Official Journal of the European Communities is Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark. This provision codifies Council Regulation 40/94 and its various minor amendments, which it repeals. The new Regulation comes into force 20 days after its date of publication (just add 20 days to today's date and you'll be heading in the right direction).

According to the correlation table at the back of the document, Articles 1 to 36 are more or less the same, following which things get more confusing.

Connoisseurs of logical stupidity will note with undiluted admiration that Article 8(5) -- the bit that doesn't mean what it says after the Court of Justice made nonsense of its phraseology -- remains untouched and unamended since this thunderingly inconvenient piece of legislative tidying up is a codification, not a reform.

Yesterday the IPKat posted the good newsthat IPKat readers who were first-timers at this year's Fordham Conference were entitled to a 25% discount on the registration fee. The Kat has now discovered that what the organisers meant to say was that this discount applies to anyone who has not yet registered this year, whether they have registered for previous events or not. If you've the time and the opportunity, please take the plunge and register: you'll never regret it!

If you want the discount, please apply by email to Alice Wong. Do not attempt to register online.

Meanwhile, the PatLit weblog is running an opinion poll, which you can find in its side bar. The question is this: "Given the current state of play in the pharmaceutical sector, where would you invest your pension fund?" The poll gives three options. The poll finishes in six days' time, so please be sure to vote if you can.

Monday, 23 March 2009

The IPKat has recently noticed, via Laurent Teyssedre's excellent blog du droit europeen des brevets, that the French patent office (commonly known as INPI) has announced that as from 3 April 2009 all sorts of useful patent information will be available online, apparently for free. INPI say:

The IPKat, who has found it a little frustrating (not to say expensive) to find French patent status information, unlike information available from the UK and German offices here and here, is very much looking forward to making use of this new service.

Merpel wonders whether the service will be available with an English user interface. Don't be silly, says Tufty, that would be making things too easy.

The IPKat's friend, scholar and inspiration Professor Hugh Hansen has just given him some wonderful news to share with his readers.

Right: do senior members of the judiciary look like this to you? If so, try the Fordham cure

As many of you may know, the annual Fordham IP Conference is taking place this year in Cambridge, England -- the first time it has left the hallowed soil of Manhattan for the peripatetic pastures of Europe. This year's dates are 15 and 16 April.

For the benefit of the uninitiated, Fordham is a scary but exhilarating event. There are lots of short and snappy sessions in which speakers' contributions are strictly limited and they are then forced to answer some sharp questions from the session's moderator and from the floor. Participants include leading lawyers, judges, academics (think Lord Hoffmann, Francis Gurry, Randall Rader, Robin Jacob, Graeme Dinwoodie, Justin Hughes, Reto Hilty, Tilman Lüder, Valentine Korah ...). The IPKat (two of whose team members have had the pleasure of speaking in the past) says, it's a bit like Jurassic Park: you can actually walk among the dinosaurs and engage them in IP dialectic. Merpel says no, it's more a sort of IP fanatic's Woodstock.

The good news for IPKat readers is this: there's a 25% discount on the registration fee for every IPKat reader who is a first-time registrant. To claim your discount email Alice Wong and put the reference "IPKat" at the top of your email. The online registration is not set up to accept anything but the stated fees, but don't panic -- an email to Alice will do the trick.

The IPKat hopes as many people as possible will attend this incredible event (so much so that he is even prepared to forgive the cardinal sin of using lightbulb imagery on Fordham's promotional literature). Fordham shares the same ideals as the IPKat -- publicising, popularising and demystifying intellectual property, warts and all, so that IP as a concept and a reality becomes more accessible to all. The registration fees are only there to cover the costs, so Hugh's offer to IPKat readers is warmly appreciated.

Conference website hereYou can take a look at this year's outstanding programme here

The IPKat suspects that there have been some funny goings-on in European corridors of power and he's not laughing. The Pharmaceutical Sector Inquiry conducted by DG Competition (see IPKat here for back-references) resulted in the publication of a preliminary report on 28 November 2008, to which responses were invited by 31 January 2009 [i.e. two months, less time consumed by the Christmas vacation]. One of the respondents was the European Patent Office, whose comments can be perused on the DG Competition website here, along with all the other contributions (the full list, posted on 16 March 2009 and believed to have been composed on 10 March, can be read here).

The strange thing is this. On 2 March 2009, MLex Market Intelligence published this note, written by Lewis Crofts, entitled "European Patent Office queries aspects of EC's pharma enquiry report". The odd thing is that the submission which Mr Crofts describes-- a fairly robust document that criticises aspects of the preliminary report in vigorous terms -- seems tobe rather at odds with the genteel draftsmanship of the document now described as the EPO's comments.

Here are a couple of examples. The version of the EPO report described by Mr Crofts "calls the commission's methodology in multiplying the patent applications by the number of EU states 'questionable and its results ... misleading'". This now appears as "... we question this methodology and its results ...". Also, the trenchant "...this method of counting patents needlessly and artificially inflates applicable numbers" has become "... this method of counting patents exaggerates applicable numbers ...". Then "We consider this inappropriate and misleading" is watered down to "It is questioned whether this is appropriate". In another passage the words "More disturbing", in relation to the assertion that the upholding of a patent but with an amended scope is a 'success', have been deleted completely.

Another oddity is that the EPO's original comments were apparently available on the website of the European Generic Medicines Association (EGA) but, as MLex reports, those comments have since been removed.

The IPKat wants to know when, and by whom, the first document was changed. MLex is a pretty ear-to-the-ground sort of operation, and it seems unlikely that it would have based its note on an ancient document, from which the Kat suspects the watered-down version was substituted for the original quite close to the time the MLex report was prepared -- and this would almost certainly be after the closing date of 31 January 2009 for the submission of comments. Merpel says, perhaps the EPO took a leaf out of its users' books and based its second filing on an earlier one with a priority date before 31 January 2009 ....

The original version of the EPO comments on the Preliminary Pharma Sector Report can be read here. The genteel version is also that which can be found here on the EPO website.

Sunday, 22 March 2009

A little bird has whispered in the IPKat's ear that there have been further developments in the saga relating to a certain patent for a 70mg weekly dose of alendronate (earlier IPKat posts on the alendronate saga can be found here and here). The Kat now learns that

"European patent EP1175904B, Merck's patent relating to 70mg weekly alendronate, was declared as lacking inventive step over the prior art by the Opposition Division of the EPO at a hearing held on 17-18 March 2009. It was one of the largest oppositions to be held at the EPO after Merck had used a divisional application to recycle their initial patent on the weekly dosage (EP998292B) after it was revoked by the EPO Technical Board of Appeal in 2006. This patent has generated huge interest within the pharmaceutical industry and had already been the subject of litigation in several EU territories."

Friday, 20 March 2009

Don't forget to check for Forthcoming Events in the IPKat's left-hand side-bar. As usual, FREE events are listed in BLUE. Right now the total number of events listed stands at 41.

Last week the IPKat, astonished that an appeal to IP Finance weblog readers produced a zero response, asked readers if they knew of any people who specialised in, or at least worked in the field of, IP insolvency in the UK. This appeal has borne fruit. Thanks, those of you who responded. A feature on IP insolvency practitioners can now be read here.

IPKat reader Sangwani J. Nkhwazi (Mancunium Intellectual Property Ltd) has reminded him that the gnashing of teeth over the proliferation of generic top level domains (TLDs) is not just the prerogative of brand owners. The World Intellectual Property Organization (WIPO) is grinding its teeth in sympathy. From this news item it can be seen that safeguarding the interests of brand owners is recognised as a matter of importance -- but it's safety at a cost.

News from New Zealand comes via the ever-vigilant Howard ("Excess Copyright") Knopf, who has furnished the IPKat with a link suggesting that the NZ government is prepared to repeal its controversial "three strikes" legislation for dealing with copyright-infringing internet users even before that provision comes into force (see here for earlier IPKat post). Off subject, Howard has also sent the IPKat this well-worth-watching (if you're a cat-lover) Capitol Cat Cam clip.

A new blog on the block is the weblog of Singapore IP practice Ravindran Associates. A team blog, it looks quite promising at this early stage of its existence. Here's a neat note on the 137-page judgment of the Singapore Court of Appeal in the Rooster brand case in which the firm participated.

On the subject of blogs, people often ask IPKat team blogger Jeremy how many intellectual property blogs he's actually involved in. To this end, he has compiled a little blogroll here, which lists most of his blogs and gives a potted description and URL of each of them. Not on the list, because it's a case of false pretences, is the Solo IP blog: it's really for practitioners and he isn't one -- though he very much supports the cause.

Some of us have intellectual property literally coming out of our ears. But for those who prefer their IP to travel in the other direction, here's news of Professor Doug Lichtman's Intellectual Property Colloquium podcasts. Says Doug:

"... each month we post an hour-long conversation about an important patent, copyright, or technology topic. ... typically the show is built around one or several conversations between me and relevant guests. ...

One charm of the site is that we offer completely free CLE credit to lawyers who listen. All of our previous shows qualify in New York, California, Texas, Illinois, and Washington, and we plan to add more states later this year. That's not itself a reason to listen, obviously, but it is an added perk for lawyers who might need that extra nudge in order to justify spending the time".

Issue two of the European Copyright and Design Reports, published six times a year by Sweet & Maxwell, has just been published. Cases reported in this issue include the European Court of Human Rights decision in Balan v Moldova, where the uncompensated appropriation of Balan's photo of Soroca Castle for use on official Moldovan identity cards was held to breach Balan's human rights. For a free inspection copy of the ECDR email Jo Slinn, who will be delighted to send you one.

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